Contributors
Since 1 January 2021, the scope of protection afforded by European Union ("EU") trade mark registrations has not extended to the United Kingdom ("UK"). However, each owner of an EU trade mark ("EUTM") that was registered before or on 31 December 2020 has been granted a comparable registered and enforceable intellectual property ("IP") right in the UK, known as the 'comparable trade mark (EU)' – hereafter "CM(EU)" – which came into force automatically and free of charge on 1 January 2021.
Where can I find details of my CM(EU)?
Owners of CM(EU) rights do not receive a registration certificate. Instead, they can access details about the right on the UK Intellectual Property Office ("UK IPO") online database. To locate details of the CM(EU), the registration number allocated to the CM(EU) has been taken from the last 8 digits of the relevant EUTM prefixed with UK009.
In summary, the CM(EU) covers the same sign, in respect of the same goods and services, and has the same filing or priority date as the EUTM as well as the same renewal date and, where applicable, seniority in the UK (whether claimed based on an earlier UK or International (UK) trade mark). The specification of goods and services is taken from the English language version of the specification available at the EU Intellectual Property Office ("EU IPO")[1].
Can I deal with my CM(EU) separately from my EUTM?
The CM(EU) is a fully independent UK legal right. This means that the CM(EU) can be challenged, assigned, licensed or renewed separately from the EUTM. However, this means that, upon renewal, a separate fee (for 10 years' protection) is payable directly to the UK IPO. Payment of the renewal fee at the EU IPO has no effect in respect of the CM(EU).
Was my pending EUTM application transferred to the UK register?
EUTM applications that were still pending on 31 December 2020 have not been transferred to the UK register.
Instead, until 30 September 2021, EUTM applicants have a right to file a trade mark application directly with the UK IPO – for the same mark, and the same (or narrower) goods and services – and to retain the same filing date (and/or claim any earlier priority date or UK seniority) as the 'pending' EUTM application[2].
Unlike for CM(EU)s, the application will be examined by the UK IPO as if it was a standard UK trade mark application – incurring the usual UK official fees. Given this additional examination, there is no guarantee that the application will be accepted even if the corresponding EUTM application has been or is accepted by the EU IPO.
What if I don't want to own a CM(EU)?
Although the CM(EU)s have been granted automatically, if rights-holders of EUTMs do not wish to hold the new CM(EU), they may opt out from doing so – in which case, they will be treated as if the CM(EU) had never been applied for or registered under UK law.
However, given the consequences of opting out, the option will not be available where, from 1 January 2021, the CM(EU) is or has been:
- used in the UK by the owner or with its consent;
- the subject of an assignment, licence, security interest or other agreement; or
- the basis or subject of proceedings initiated by the owner or with its consent.
Requests for opt out can now be submitted to the UK IPO, which must include details of any person with an interest in the corresponding EUTM, since notice must also be given to interested third parties in order for the opt out to have effect. If the UK IPO determines that the opt out request has been inappropriately exercised, it may take steps to reinstate the CM(EU).
What if my question is not answered here?
Please contact any member of our Intellectual Property team if you have any additional questions, such as:
- what happens if I had not recorded a trade mark assignment or change of details at the EU IPO before 31 December 2020?
- what happens if my EUTM is restored or reinstated?
- what happens if I miss a renewal deadline for my CM(EU) at the UK IPO?
- will the UK allow me to convert my EUTM registration or application?
- what happens to ongoing actions (e.g. court proceedings, cancellation actions, or UK IPO actions) involving an EUTM?
- can I use evidence from the EU to prove use, or reputation, of my new CM(EU)?
- what has happened with certification and collective marks?
- what has happened with geographical indications?
- are my licences and security interests still valid and in force in the UK?
[1] Anyone with a sufficient interest who does not believe the English version satisfactorily reflects the corresponding EUTM may submit a substitution, verified to the satisfaction of the UK IPO Registrar as corresponding to the authentic text.
[2] If the details of the later application do not match the corresponding EUTM application, the owner will not be able to claim the earlier filing (or priority) date(s).
